Discover how trademark, patent, and software law can help small business, entrepreneurs, and inventors. Check my blog for questions and answers.

Jun 19 Can The Big Bang Theory trademark be diluted?

Does ABigBangTheory.com domain name dilute The Big Bang Theory trademark?

I want to register the following domain name ABigBangTheory.com. The website offers science-based advice about weight lifting, bodybuilding and fitness. The idea would be to help nerds, desk jockeys and other non-athletes to get ‘big’. The point of the name is to combine science and ‘big’ in a clever way. Could this be considered as diluting the trademark of ‘The Big Bang Theory’ sitcom? Could they sue me for this?

~ Scottsdale, AZ

Great question. Dilution is only available to "famous" trademarks. Proving that a mark is famous is fairly difficult. Before your question, I had never heard of this TV show. So, at first I doubted that it could be famous. Famous marks are generally marks that we already all know. Yet, one Google search later, I discover that this is a fairly popular show that has run for seven years (I don't watch TV). Without doing significant research into popularity and reach of this show (and possibly expensive survey research) and without knowing what evidence could be available, it many not be possible to ultimately conclude whether this mark is famous or not.

Additionally, before a trademark may be diluted, is must also be distinctive. So, consider the original use of the term "Big Bang Theory". Physicists first used this term to describe a scientific theory for the beginning of the universe. Generally, this will make it harder for the term "The Big Bang Theory" to make a claim for dilution, because, the term "Big Bang Theory" is already in use as the name of a well known scientific theory, which diminishes the distinctiveness.

Further, you might also need to consider state trademark laws, for example, tarnishment. Depending on the specific content and presentation of your website, tarnishment may also be a concern.

Also, if you are merely providing a non-commercial website. Then, dilution may also not apply. However, if you are making money through advertising placements, that may be enough for the website to be considered commercial.

Finally, there are not all that many (relatively speaking) trademark dilution cases to compare your situation with. In the end, any legal opinion may well be based on a fair amount of (very-well-informed-and-educated) speculation.

I recommend that you work with an attorney to help clear your trademark before use. While working with an attorney will not be a guarantee that you will not be sued, it can help you minimize your risk. For example, you may be able to acquire a general business insurance policy that includes "advertising injury" coverage. This might provide for your defense if you are sued. I am sure that the best specific strategies will only become apparent after an appropriate consultation.